In the United States we have wonderful freedom of speech rights, we are free to continue to express our opinions. During a hearing in this case the judge said that our rights of expression and speech cannot possibly be limited by prohibiting us from using any website, even on an unrelated business, to comment favorably about the Korean company's business or critically about the business, but, in any event, not in a way that suggests that we are conducting the business of the Korean company. We appreciate the rights we have been granted and we believe these same rights will assist us in reaching a fair resolution of this case.
Our Founding Fathers ensured that the right of free speech would be protected for all Americans. We appreciate the liberties and privileges that have been provided and that we enjoy as US citizens. This right will now be exercised as the following opinions are expressed describing some of our views of the sequence of events that have taken place while preserving and defending the ownership of our domain name.
We appreciate everyone who is steadfast behind us; we appreciate all of you and all the support you have shown us. We would like to reiterate our unwavering resolve to take up this cause and see to it that fairness prevails. We will not relent. We will continue to move forward no matter which avenue we must take or how far up the path we must go. Fundamentally the law is on our side and the evidence will speak for itself. We will see this through no matter what effort or duration is required to ensure that justice is preserved.
We appreciate those who have already contributed to this site and we invite you and others to contact us to obtain the information required so that you may be able to participate and post your opinions.
The following opinions are to help provide information for all those who have supported us and for those that are interested in seeking justice for domain name ownership rights:
UPDATE:
A document filed with the court states that the bad faith and malice of Erik Bethke, the Chief Executive Officer of GOPETS, LTD, is clearly demonstrated by his documented statement to his associates in which he used a four-letter obscenity to describe what he planned to do to one of the owners of the domain name. (The document was filed with the court by the attorney for the Korean company.) For more information please visit the PACER service center.
The Cost of Defending a Domain Name
Far more evidence has been discovered during this process which is extremely damaging to the Plaintiffs case. The information is currently labeled “confidential” and not privy to everyone. We strongly believe if the public were to have access to this information, evidence which has been produced by the Plaintiff themselves, this case would be vastly different today.
We purchased the domain GoPets.com in March 1999 with the concept of developing a premium website dedicated to the health and care of pets and animals. The site is also devoted to animal enthusiasts and those involved with the caring and well-being of pets.
Shortly after obtaining GoPets.com we developed a thorough and comprehensive business plan for GoPets.com and submitted the project to the University of California-Santa Barbara in May 1999. Our GoPets.com business plan was outlined in a 37-page report, which provided detailed information on how we could achieve our Internet concept for pets and animals on the web.
One of the authors of the GoPets.com’s business plan has worked in the veterinarian field for approximately 10 years and continues to do so. The second author has a marketing degree, develops online businesses, is a UCSB certified webmaster, and has worked in the industry for over a decade. Others who are part of our development team include a senior systems administrator, and several professionals in the pet industry, including veterinarians. Our intentions with the continued development of GoPets.com have been genuine and sincere for pet owners and pet enthusiasts.
THE PLINTIFF SOUGHT US OUT, THEY CONTACTED US FIRST- THEY INITIATED NUMEROUS CONTACTS, THEY INITIATED AN ATTEMPT TO PURCHASE OUR DOMAIN IN 2004 BEFORE THEY FILED FOR A TRADEMARK, THEY INITIATED MANY PURCHASE OFFERS TO US OVER SEVERAL YEARS. WE NEVER INITIATED ANY OFFERS TO THEM.
In August 2004, five years after the commencement of our project, Erik Bethke, the CEO of a Korean gaming company, found us online and sent several letters acknowledging that our company OWNED GoPets.com and that he wished to PURCHASE our domain. Here is one of those first letters.
No Sale took place.
Multiple written inquiries and phone solicitations would also follow by the Korean company and its associates in an attempt to seek ownership of our domain name GoPets.com.
Again no sale took place, as we wanted keep our domain name for our pet-related website. The Korean company would not relent. It attempted a different approach to outright take our name from us. The Korean company filed a claim with the World Intellectual Property Organization (WIPO case number D2006-0636) and claimed that it should have ownership of our domain name.
In the Korean company’s WIPO filing, it FRAUDULANTLY CLAIMED that it had a trademark for the term “gopets.” The company boldly submitted a “document” as evidence of this alleged trademark ownership. This would factually be proven to be false; the trademark was not obtained until well after the WIPO proceeding ended.
The Korean company also FALSELY CLAIMED to WIPO that it owned the domain name gopets.NET, which was central to the case. Yet by performing a simple “who-is” lookup, the domain name was and still is registered to an individual in the United States.
At some point we determined that the individual listed on the registration worked with the Korean company. This relation was important and was previously hidden.
Five years after our website existed, the Korean Company started to use a similar domain name as ours and purchased the domain name “gopetslive.com” for its cartoon virtual avatar characters. When the company registered this domain name it properly registered it under its Korean address. Yet over a year later when the associate obtained the domain name gopets.Net, it was deceptively registered under an individual using a U.S. address. It does not list the Korean company, or the Korean company’s address.
Irrespective of the false claims submitted to WIPO by the Korean company, and several other inaccuracies, the WIPO arbitration board
ruled that in fact WE OWNED GoPets.com.
We were pleased to move on with our business development plans for GoPets.com. Clearly, we legitimately purchased the domain name in good faith for developing our pet website, and additionally WIPO found in favor of us. This would not stop the Korean company. It sought to obtain a trademark for the term “gopets,” which was eventually granted seven and a half years after our first use of the term and domain name. This was obtained, in our estimation, in order to steal our domain name from us.
We have filed for a review by the Trademark Trial and Appeal Board (TTAB), Case No. ESTTA184958, which is currently on hold until our current court case is finalized. We have good reason to believe that there are significant problems with this obtained trademark, including:
1. The Korean company clearly knew of our previous existence and our previous use of our term.
2. In the trademark application, the Korean company failed to honestly answer the “Declaration Signature” section where the applicant is legally required to list all other previous users of the term that it is applying for.
3. The application process itself had many setbacks. It was halted and suspended several times for various reasons.
4. The Korean company failed to mention the numerous offers that it made to us to purchase our term and domain name and how it admitted (in writing) our ownership for the term BEFORE it filed for a trademark application.
5. The application claims a “first use” date of the term “gopets” as of Aug. 20, 2004. This is important because there are specific requirements to be met for the claim of “first use.” It is very unlikely the requirements were met, and it will be extremely difficult for the applicant to prove that all of these requirements were met.
6. The applicant was applying for a trademark for his game to be used “online” and “over the Internet.” However, no domain name was provided for this Internet venture.
7. The applicant for the trademark provided two specimens (screen-shot examples) of his online game. In both specimens the domain-name portion (URL) is cut off, and the association to a domain name for the online game is not provided.
8. During the application process, the Korean company did not mention that WIPO ruled in our favor.
A Significant Legal Condition- What was the INTENT of the applicant? This is a very important legal question and will not be overlooked.
AT THE TIME THE TRADEMARK APPLICATION WAS FILED FOR:
a. The Korean company ran its game using the domain name “gopetslive.com.”
b. The Korean company knew we owned and operated “GoPets.com.”
c. Gopets.net was currently in use by a woman in Australia (the Korean company would not purchase it until a full year after it applied for its game trademark).
d. THEREFORE, the only game-related domain name the Korean company owned at the time of filing was “gopetslive.com.” This was the ONLY domain name it could have legitimately INTENDED on using.
The Korean company currently uses the company name “Gopets Ltd,” again copying our term. In November 2006 The Plaintiff demanded that we make an offer. The Plaintiff, IN WRITING, REQUESTED THAT WE RESPOND TO HIS STATED OFFER BY DECEMBER 11th 2006. SINCE THE PLAINTIFF INITIATED A REQUEST FOR A RESPONSE, EXTORTION DOES NOT EXSIST. THE SAME LETTER ALSO INFORMES US THAT IF WE DO NOT ACCEPT HIS STATED OFFER THAN HE WOULD USE ANOTHER NAME – WE DID NOT ACCEPT HIS OFFER, THEREFORE NO EXTORTION EXSISTS SINCE HE INFORMED US HE WAS USING ANOTHER NAME. Despite the fact that it harassed us several times before to make a sale, and that it falsely took us to WIPO to take our domain name from us, we extended a corporate courtesy and complied with the request.
In our offer, we listed several reasons why our domain name was valuable to us and gave a fair-market price reflecting these points. We also asked if we could be put in touch with some of the company’s investment partners in order to confirm that the company was a potential serious buyer, as it was difficult to trust at this point. The Plaintiff Our corporate courtesy was a genuine attempt to try to work something out between all parties involved, but the action is now being claimed as an act of extortion.
In March 2007, a lawsuit was filed against us with the U.S. District Court in the Central District of California. The Korean company is represented by lawyers Tanya Forsheit, Michael Firestein, and several others with the law firm Proskauer Rose, LLP. The company now uses its highly questionable trademark in an attempt to steal our domain name from us. Many of the court filings and additional details are available to the public on the Internet (Case No. 2:2007cv01870). For more information please visit the PACER service center.
The Plaintiff’s Lawsuit:
There are three leading points the Plaintiff (Bethke) argues with his case. The Plaintiff alleges we have 1) committed domain-name cyber squatting; 2) illegally renewed our domain registration; and 3) infringed on a trademark.
These are the central themes of the case. We feel confident that each charge will be adjudicated in a fair court of law and will list sound responses to each claim.
1) The Plaintiff alleges that because he obtained a trademark for the term “gopets” seven and half years after we purchased our domain name “GoPets.com” that we are now somehow “cyber squatting” because the Plaintiff subsequently obtained a trademark.
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a. The Defendants owned and operated the website “GoPets.com” a full five years before the Plaintiff ever claimed his first use of the term “gopets” and seven and half years before he obtained a trademark for that term. Cyber squatting does not apply.
b. The Anti-Cyber-squatting law was not even established at the time we purchased the domain name “GoPets.com.” Cyber-squatting laws cannot apply.
c. The Plaintiff was aware of our FIRST USE of the term “gopets” BEFORE he even applied for the trademark for the exact same term. |
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2. The Plaintiff alleges that we re-registered our domain name “GoPets.com” in bad faith. The Plaintiff claims that although he established a trademark for the term “gopets” nearly seven and half years after we purchased the domain name “GoPets.com,” that each time we re-register our domain name it is being done in bad faith because a subsequent trademark has now been established by the Plaintiff.
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a. In order to maintain ownership of a domain name, the domain owner is REQUIRED to pay a renewal fee to an ICANN accredited registrar on an annual basis. Today it is possible to pay these registration fees for multiple years at a time. If the registration fee is not paid, the domain name will be returned to the pool of available domains for the public to purchase.
b. The Defendants have kept their registration for the domain name “GoPets.com” current in order to maintain ownership by paying their registration fees. This is the standard procedure for all domain owners worldwide, including the Plaintiff, who is required to pay annual registration fees to maintain domain-name ownership. |
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3. The Plaintiff alleges that although we owned the website “GoPets.com” and used the term “gopets” many years before he used that same term, that we are now infringing on a trademark that the Plaintiff subsequently obtained. Aside from this, the Defendants point-out that there are several issues with the trademark acquisition itself.
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a. Prior to filing for a trademark for the term “gopets,” the Plaintiff mailed us a letter stating WE OWNED the domain name “GoPets.com” and thus acknowledged us as the owner of “GoPets.com.” In this same letter, the Plaintiff inquires about purchasing the domain name “GoPets.com” from us.
b. The Plaintiff works in the Internet industry. It is a reasonable assumption, and a global Internet standard, to assume that the name of a domain name will be used on the domain’s website (in this case, that the term “gopets” will appear on the website “GoPets.com”).
c. The Plaintiff authored a book called “Game Development and Production.” When addressing the selection of a domain name and trademark he stated in the book that "simple" URLs are already taken, and he specifically goes out of his way to advise people not to select a domain name that “could potentially confuse the consumer” (Pg. 336).
d. The Plaintiff is aware that our website “GoPets.com” is for the purpose of providing information for the care and maintenance of real live pets and it has expressed so in writing. The Plaintiff is aware that we have no intention of using “GoPets.com” to run a virtual cartoon avatar site. For trademark purposes, the Plaintiff is aware that we offer a completely different kind of service on our website.
e. In the application for the trademark, the Plaintiff describes his game to be used “ONLINE” and “OVER THE INTERNET.” By practicality, use of this online game requires the use of a domain name to allow customers to navigate to the website. The Plaintiff’s trademark application neglects to provide a domain name by which his game is to be used. This is a major omission for a game that is to be used on the Internet. In the application for the trademark, there are two specimens (screen shots) that provide visual examples where the domain name is deliberately cut off.
f. At the time that the trademark application was filed, the Plaintiff operated his game using the domain name “gopetslive.com.” This is the name he used while securing early investors. At the time of filing for his trademark, we believe this was the only domain name he owned that was related to his game. The Plaintiff still uses “gopetslive.com” today. This was the name he intended on using.
g. In the trademark application, sections 2.34(a)(1)(i), the applicant is REQUIRED by law to truthfully comply with the “Declaration Signature” section, which clearly states that the applicant declares he has no other knowledge of anyone else who may lay claim to the mark for which he is applying. Clearly the Plaintiff was aware of our first use for the same term for which he was applying. If this section had been filled out honestly, the trademark might have never been granted.
h. The Plaintiff claims a first use date of Aug. 20, 2004 for the term “gopets” as provided in his trademark application. The Defendants established their first-use date for the term “gopets” and the domain name “Gopets.com” five years earlier. (To view the trademark information, please visit the USPTO.)
i. The Plaintiff was CLEARLY AWARE of our website “GoPets.com” and the use of the term “gopets” BEFORE he filed for a trademark using that same term. |
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The Plaintiff claims that additional domain names purchased by us that are related to the premium name of “GoPets.com” were made in bad faith, infringing on the trademark later acquired by the Plaintiff. After WIPO had ruled in our favor we genuinely believed we had the right to continue with our development plans and we assumed we could add related domains to our GoPets.com portfolio. The Defendant’s web developers and routine domain name acquisition is crucial to successful website development and online placement. As related to “GoPets.com,” these names were purchased to add to the portfolio, for search engine optimization, referencing, securing brand and name recognition, and to prevent others from using our established domain name.
More Actions:
The Korean company still kept at it. It had its law firm file an injunction order requiring us to put a disclaimer at the top of our website in late 2007.
Currently, the Korean company is requesting a motion for a Summary Judgment where we would be required to pay $1.9 million and be forced to turn our domain names over to the Korean company.-(This was scheduled to be heard in court on April 21, 2008, in Los Angeles but has since been postponed.)
We maintain that we have done nothing wrong. We simply wish to keep our domain name for our pet-related website. We wish to defend this right. No matter what the outcome, we are determined to protect our right of ownership. We plan to seek out any legal resources that might be required to maintain these rights, and if necessary, we will appeal this case to whatever level of court is required.
If any infringement of terms has taken place, it has been that of the Korean company copying our term. It knew we existed and it knew its actions would create direct confusion with us, but yet it persisted forward by using our term. The company’s later acquisition of the domain name gopets.Net is a good example of this.
Conclusion:
It has been a time-consuming and costly venture just to keep our domain name in our possession. We set out in good faith to build a website for the care and maintenance of pets.
We have had our development halted due to a false WIPO claim, which temporarily locked our site, and now we are being restricted due to this long and protracted litigation in federal court.
Our true intentions for developing a site which benefits pets and animals has always been clear, and the Korean company which is attempting to take our domain name from us has been well aware of our plans. It is also factual that we used our creatively developed term FIRST and obvious that real living and breathing animals are not at all similar to cartoon animation stand-ins for infringement comparison purposes.
The Cyber squatting law was NOT written for cases like ours. Cyber squatting is when a perpetrator purchases a domain name and deliberately infringes on a well-established trademark in a bad-faith effort such as profiting off of the obtained domain name. The Cyber squatting law is clear that bad intent is a central element required to be complicit. It is clear that we have not had bad-faith intent. The cyber-squatting law was not even in place when we obtained our domain, so it is not even clear how it would apply. We purchased our domain name first, and we purchased it before any cyber-squatting laws existed – it can’t be any simpler. Even if we are held to the standards of the cyber-squatting laws, we are still exonerated and have done nothing wrong.
The action that the Korean company is attempting against us has become known as “reverse cyber-squatting.” This is where an unscrupulous party attempts to take a domain name away from its legitimate owner.
We find it highly hypocritical that Bethke is championing the idea of creating a bill of rights for virtual avatars,
yet in the real world we live in he chooses to neglect one of the most basic and fundamental rights of property owners.
If the Korean company should somehow succeed with a legal blessing, it will give the green light for a flood of new lawsuits to follow. It would allow perpetrators to scan the millions of legitimate domain names that are already in use in an attempt to detect vulnerability. For those domain names that are not fully protected, a trademark could be filed copying those terms - and a precedent case would exist to allow them to steal those domain names away from their original owners. We believe this was not the rights that ICANN had originally intended when granting domain-name ownership to their owners.
We wish to thank the many friends and supporters for our cause and for their interest in our case.
Please bookmark this page and check with us again for updates on this case at www.DomainNameJustice.org
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